UK trade marks- the application process

When looking to register a UK trade mark, there is a process that needs to be followed. Whilst this is not a complicated process, there are a number of steps that need to be fulfilled before an application is submitted.

All application for the registration of UK intellectual property is done through the UK Intellectual Property Office.

Not only considering and deciding applications they also hold all registers for all IP and are involved in any dispute or change to details.

When registering a trade mark, there are three main stages to follow.

The first is to make sure your potential mark qualifies as a trade mark. This includes both establishing if the mark itself satisfies all the criteria and in addition making sure it is free to register and would not conflict with any other mark that has already been registered. In short, the mark itself must contain words, pictures, sounds or colours and be unique. Distinctiveness is key and descriptiveness is a no-go. When establishing if the mark is already being used, a database of all existing marks is available on the UK IPO website in which you can search for your proposed mark.

In addition, The Trademarkroom that can give you peace of mind that no nasty infringement surprises may pop up in the future by carrying out an in-depth detailed search on your behalf.

Following this, a formal application needs to be made. You can either apply online or through the post, both methods The Trademarkroom can give expert assistance on. If you want to submit an application online, a reduced fee of £170 is to be paid for one class of goods or services. The standard application service link is available through the UK IPO website. In addition an application through the post carries a slightly higher fee of £200 to be paid and the form TM3 needs to be submitted to the following address: 

Intellectual Property Office 
Trade Marks Registry 
Concept House 
Cardiff Road 
Newport 
South Wales 
NP10 8QQ  

After your application is submitted, it will be consider by the examiner who will issue an examination report, which will highlight any potential problems within 20 days. You will then be given an additional 2 months to fix any errors. If the examiner has no objections to your application it will be published in the Trade Marks Journal for 2 months to allow for any other objections. If there are no objections lodged, your mark will be registered and the certificate issued to you. However if there is an objection you can either withdraw your application, negotiate with the objector or defend your application through the aid of a trade mark specialist. If the objections are not solved you cannot register your mark.

Once your trade mark is registered, you will have to renew it every 10 years as well as indicate to the UK IPO any change in details throughout the time it is registered.

If you need any assistance or advice in relation to a trade mark registration application, do not hesitate to get in contact with Jane at The Trademarkroom.

By Ellis Sweetenham